Guest Post: Keys to Hiring Newly-Minted Patent Lawyers

by Thomas G. Field, Jr., Professor, University of New Hampshire (UNH) School of Law (formerly Franklin Pierce Law Center)

There is much ado about generalist and specialty law school rankings, but it is difficult to understand why they should make much difference in hiring new, much less experienced, patent lawyers.

Technical training figures prominently too, but that is difficult to factor in. As has been discussed on this blog, two others and I published a paper concerning the correspondence between the percentage of attorneys with formal training in computer science (our focus) or engineering and the percentage of computer-based patents issued. There we argued, as I strongly believe, that the PTO’s discrimination against computer science graduates is irrational.

The paper also implies that one needs formal training in a particular art to competently draft and prosecute applications in that art. Most patent attorneys would reject the idea. Despite co-authorship, I do too.

I regard the most important technical criteria to be attorneys’ (or agents’) capacity to be educated by inventors and, as one of our alumni put it several years ago, function as a mediator between inventors and examiners. In that regard, I recall the late Robert Shaw. Prior to coming to Pierce in the mid-1970s, where he taught claim drafting and prosecution until he retired, Bob was a full-time attorney for MIT. It’s difficult to imagine that he could have had much expertise with regard to the wide range of applications drafted and prosecuted on behalf of an incredibly sophisticated faculty. Yet there is no reason to doubt the quality of his work for people there or at other universities. I do not envy those who attempt to judge such capacity from college transcripts and unrelated work experience.

Moving from technical to legal training, I regard the most important criteria to be the capacity to identify what decision makers will find critical, spot flaws in opponents’ positions and to argue effectively for their own. Regarding potential clerks, Justice Scalia famously stated, “I’m going to be picking from the law schools that . . . admit the best and the brightest, and they may not teach very well, but you can’t make a sow’s ear out of a silk purse. If they come in the best and the brightest, they’re probably going to leave the best and the brightest, O.K.?” (as quoted by Adam Liptak, On the Bench and Off, the Eminently Quotable Justice Scalia, N.Y. TIMES, May 12, 2009, at A13. If so, what’s gained from the education? There’s also risk of loss. I was struck by the observation that, “For most of the past fifty years, attending Harvard Law School was a miserable experience for the majority of its students.” Kevin K. Washburn, Elena Kagan and the Miracle at Harvard (2010). It is difficult to see how students would be better off for such an experience — unlikely to be unique.

General ranking may be useful for identifying some of the best and the brightest. But many choose schools based on a variety of other factors including cost, effects on partners, and quality of life. It would therefore seem that indicia of drive and intelligence other than that reflected in decisions of law school admissions committees deserve consideration.

In tough economic times, hiring seems more likely to turn on the skills and knowledge candidates have, rather than what they are capable of acquiring. If so, hires may be based on program rankings. But, as I have pointed out at length in Ranking Law Schools’ Special Programs, 50 IDEA 335 (2010), all rankings are suspect, whether based on the number and fame of faculty, the number of specialty courses offered or something else. In that article, at 344, I ultimately wonder whether “anyone other than a fool would favor one candidate over another based on reputations of professors neither candidate may have seen or lists of courses neither may have taken.” You might too.

Oddly, it seems that few interviewers ask questions designed to test a candidates abilities. I once had the task of doing “threshold” interviews for patent prosecutors at a law school job fair. I brought two short patents with me–one illustrated and explained how a flush toilet works and the other a 3-way light switch. I had each candidate pick one of the two patents to read and then explain to me how a toilet flushes or a 3-way light switch works. I told them they could ask me anything they wanted as they studied the patents to understand the invention. So what I had was the experience of reading a disclosure and doing a disclosure meeting with an inventor for simple technologies. I then got a demonstration of their ability to learn and explain. I think this exercise brought in some of the better hires we have gotten from this source. You might need to take some anti-depressants before doing this however.

If I ask a question. I want an answer. You may be a straight arrow. And not like I have been led to believe. I have a drawer full of who they say you are. You still must answer the question. If you don’t what do you think I will do?

For patent preparation and prosecution attorneys, the best indicators of success are:
1) undergraduate major, grades, and university
2) undergraduate grade in advanced writing course

These factors are more significant that law school or law school grades or work experience.

I’ll take a candidate with a 4.0 at MIT and 3.0 at Franklin Pierce any day over a candidate that has a 3.0 at Ohio St. and a 4.0 at Harvard Law. The likelihood that the latter candidate will enjoy and stay in the patent prosecution niche is almost zilch.

Hiring patterns related to new patent attorneys are NOT monolithic across hiring institutions. A couple of things–

First, the post mentioned hiring “newly-minted patent attorneys”. What that means in practice is “newly-minted attorneys”, since most do technical before legal education.

The hiring criteria really depend upon the kind of firm doing the hiring–large law firm, look to the 3 criteria I mentioned earlier, and NEVER underestimate personal recommendation, especially if there is nepotism involved.

“Boutique” firm? Wants prestige–best school, plus PhD, regardless if it is all meaningless. They want to compete with the big boys on paper–not just that, they want to demonstrate that they can out-do them.

Second-tier boutique firm? Regionalism rules. Someone from a “good” local law school, a known quantity. Not a threat, is more likely to stay around the firm and in town than is some high-flier who is parachuted in from the Ivy League.

Educational institution? Hiring is all done by headhunters, who develop personnel profiles based upon their vision for the department–usually bizarre criteria, only remotely related to the actual practice of patent law. Looking for organization-types, diversity is the main driver.

Local general practice firm with an IP department? There is no current hiring, so point is moot.

Corporate? This is the only place that technical qualifications matter one bit, aside from the boutique firm specializing in a particular field and working very closely with clients who effectively treat them as in-house counsel, for workflow purposes.

Please excuse the hyperbole, but all the other stuff like being able to draft a claim, respond to OA’s, be able to talk to the client efficiently and courteously, those are all the hallmarks of transfers, along with portables, depending on the level. Also very important in tiny law offices, from solo to maybe 5 attorneys, where they actually need to get something done, and are actually accountable to the client. THAT is where the action is, Atticus.

The examinations I sat, to qualify as a UK Chartered Patent Attorney (not attorney at law), were the first in my life to test specifically for the presence of those aptitudes and abilities that make a good patent practitioner, notably, being able to see the wood for the trees, to distinguish what is of crucial importance from that which is not, and then communicate it in writing, clearly and unambiguously. Swotting is not enough. Talent is what is needed.

Consider the pass rate for these UK patent attorney exams, keeping in mind that the UK patent attorney firms recruit these days almost exclusively from Oxbridge graduates. It has been as low as 1 in 8.

>>If they come in the best and the brightest, >>they’re probably going to leave the best and >>the brightest, O.K.?”

The other problem with that is, who says they are the best and brightest? Scalia is saying that he is letting Harvard say–and not Scalia–who is the best and brightest. Thank goodness he wasn’t made the chief justice. Additionally, the best and brightest after undergrad are not necessarily the best after law school. Another problem is that Harvard does not have room for all the best and brightest.

Scalia: you were once great, but the world changed and you did not. The SCOTUS will be better off when you leave.

“If they come in the best and the brightest, they’re probably going to leave the best and the brightest, O.K.?” (as quoted by Adam Liptak, On the Bench and Off, the Eminently Quotable Justice Scalia, N.Y. TIMES, May 12, 2009, at A13. If so, what’s gained from the education?

This strikes me as a serious non sequitur. Scalia’s point was simply that even if you assume that there’s no real difference in the quality of the legal education at an elite law school, there is still a positive signaling effect associated with the elite law school degree, for the reasons he gave. However, this says absolutely nothing about whether the net effect of that non-distinctive education is positive. Is the author really suggesting that nothing is gained from a law school education?

I was struck by the observation that, “For most of the past fifty years, attending Harvard Law School was a miserable experience for the majority of its students.” Kevin K. Washburn, Elena Kagan and the Miracle at Harvard (2010). It is difficult to see how students would be better off for such an experience — unlikely to be unique.

Another non sequitur. Who says that people can’t be better off for having had a “miserable experience”? I dare say that there are more than a few Marines out there who will tell you that there time at Parris Island was a “miserable experience,” but I bet most of them will tell you that they are better off for it. At the other (albeit fictional) extreme, the citizens of Aldous Huxley’s Brave New World were generally able to avoid miserable experiences altogether, but I wouldn’t trade places with one of them.

To the extent that the author is suggesting that a properly prepared and motivated student is somehow made worse off (or a poorer patent attorney) by attending Harvard Law or another elite school, I think he’s all wet. If the author is suggesting something else with this portion of the article, then it’s not very clear.

I believe that a patent professional’s worth is greatly enhanced by practical work experience in industry. As an example, a number of years ago I became involved with a patent portfolio relating to digital television time base correction technology. The portfolio had been acquired by a television transmitter manufacturer when they purchased the startup company founded by the inventors. The transmitter company attempted a license campaign. An offshore infringer asserted some “killer” color corrector prior art and threatened to file a reexam. The patent holder’s well seasoned and well respected attorney (who had prosecuted the portfolio) engaged a hired gun expert. The two came to the conclusion that the art was highly pertinent. Tellingly, that attorney did not have an technical degree and had never worked in the industry and while the expert had a technical degree he had never worked in the industry either.

The owner discontinued the licensing program and eventually sold the portfolio for pennies to a former employee of the startup. The new owner had worked with the patented technology for years. The new owner restarted the licensing program, resulting in attacks by infringers in four reexams. The new owner was easily able to demonstrate that the digital time base correction technology was patentably distinct from the prior art color timing corrector technology. The new owner continued the licensing campaign, eventually bringing in well over $100 million in royalties before the patents expired. Today that patented invention is used in every TV sold in the US.

I believe that the prosecuting attorney provided his client with terrible representation. Had that attorney ever worked in the industry he would have easily recognized the value of the invention in the face of the prior art or at least would have known enough to hire a competent expert for technical advice. Instead his client made poor business decisions based on poor information which caused the loss of a very valuable asset.

Depending on the art, there is a certain minimum level of technical background that will get you through your day in patent prosecution. With certain exceptions, this is often a degree in the right major, and where it was obtained or what one’s grades were is not generally of much importance as such (those last two words are important, though).

In some low tech arts, or arts with a high level of abstraction (computers, perhaps?), it may make little difference if one has the wrong degree, or perhaps even whether one has a degree atall, but in the latter case getting admitted to the patent bar may be a problem! At the other extreme, perhaps in biochemistry you might need a PhD, or so I am told, although I don’t honestly know because that isn’t my field.

As an EE I regularly turn down cases that are ‘too chemical’. I have also recently experienced someone else refusing electrical cases that I tried to give him, and he has a master’s degree in computer engineering. So don’t try to tell me that a bachelor’s degree level understanding of a technical field is never necessary. For most cases, it is.

OTOH, there will be very few cases where counsel has a detailed knowledge of the particular technology, i.e. where they actually held a technical job in their former life (before patents) dealing with precisely the same thing. It happens, even to me, but very seldom. This is where the ability to learn on the job comes into play nearly all the time, but it is not generally of great value without a background in the basics.

Intelligence is key, but for some reason no attempt is made to assess IQ directly. Perhaps we think it rude? Graduation from a top school with good grades is usually the measure taken, but it is a pretty poor one, that finds some of the brightest without theoretically including any duds. And yet duds there are too, somehow or other.

The above makes a good point ^. Being a patent attorney requires lots of skills – a) writing, b) legal, c) scientific, d) communication, e) grasping new concepts in short amounts of time. Very few people, it turns out, are good at this entire skill set which is why we get paid what we do.

Regarding the opinion expressed that technical experience in patent attorneys is not primary or required. I think Field is correct that the ability to be educated by inventors is important, but a technically trained patent attorney is going to produce much better patent applications and application drafting strategy than a non-technical generalist. What if the inventor is poor at communicating crucial technical aspects of the invention and the attorney is ignorant of a technical issue not communicated by the inventor? A brilliant person can certainly “fake” the technology, but if you can’t hire only brilliant people, then technical training is vital. This mostly has to do with drafting the patent application. I would agree that, once a decent patent application is drafted, then most smart patent attorneys can work with the application and the inventor to argue with the examiner and battle it out in litigation. However, the patent application is the foundation of all of that, and it is much harder to do without decent knowledge of the technology.

It’s about time this has been said in an open forum! When I look to hire a patent attorney… even for an internship… I want someone who can do the work. I couldn’t care less what their grade was in evidence class or even their GPA. As long as their law school is a decent one, that’s fine… but if they go to a tier 1 or 2 school and have no work experience, or worse yet, have “entitle-itis” they’re useless to me. If they can answer an Office Action and communicate what they wrote to a client while muddling their way through to get a diploma from a (halfway-decent) law school … that’s a person worthy of getting my money.

He also makes a good point that some of us have personal lives and aspirations which are more important than going to Harvard. Personally, I arguably went to a less prestigious law school than I got into to be near family … and further, I worked through full time law school to support my family.

Computer science degrees vary widely across the country. A computer scientist at one institution may essentially be a math major, at another institution a software engineer, and at another a computer engineer. Contrast that to electrical, mechanical, civil, chemical and computer engineering educations, which are relatively homogeneous across the United States and even the world.

In any event, most computer science majors can register for the patent bar if they take an extra physics class and a basic computer architecture course. One can take these courses online, pass fail.

I have two comments, one about law school (which I attended in my 50s) and one about patent practice. 1. In three years I never once heard mentioned either (a) stare decisis or (b) justice.
2. As a practitioner, I’ve found my superior linguistic skills compensate for my relative lack of technical experience. The best results come from collaboration, either directly with inventors or with my more technically qualified colleagues.

“I regard the most important technical criteria to be attorneys’ (or agents’) capacity to be educated by inventors.”

Professor Fields,

Like Andrew Dhuey, I totally with agree your statement. Being able to have the inventor/technical person “educate” you is by far the most important skill to have and helps immensely in eventually educating a patent examiner during prosecution. My attitude is if the inventor can educate me about their invention/technology, I can do the same with the patent examiner. That usually involves us (the patent attorney/agent) asking lots of questions for the inventor to respond to, hopefully the same ones that a patent examiner might ask.

The guest paper seems to focus on the challenge of selecting from a group of employment candidates. The focus seems to be on parameters to guide the decision with some considerable emphasis on schools attended. Yes, those are considerations, but I think success as a drafting and prosecuting patent attorney/agent is associated with other important considerations.

I agree with:

“the best quality is the ability to learn and learn quick. If you cannot pick up new technology quickly — i.e., within 30 minutes, you are going to be in trouble.

“The difference between being successful and happy and being successful and miserable is that ability to read a disclosure/specification once (and understand the invention) and the need to read the disclosure/specification 3 or 4 times before you get it.

“In patent application prosecution/preparation you have a time limit (unspoken or not).”

The abilities to understand inventions, identify the critical inventive feature, and present the point well to the examiner are all-important. But I also think that the ability to maintain a relationship, a supportive and productive relationship, with inventors is also very important. Truly outstanding patent professionals are those that inspire their clients to understand their inventions better.

In many cases, not always, the patent application process is one where the invention can grow over time. A patent professional who facilitates this growth by engaging in a true partnership with the inventor, should score high on the employability scale.

Speed, accuracy, thoroughness, and well-crafted claims, argued at some point concisely and correctly in light of the cited references. To the extent your technical education and technical experience help you to pull this off without bringing the institutional inventor’s day job to a halt, and you do all this while meeting the target hours allotted for the task, so much the better.

IMHO, the best quality is the ability to learn and learn quick. If you cannot pick up new technology quickly — i.e., within 30 minutes, you are going to be in trouble.

The difference between being succesful and happy and being succesful and miserable is that ability to read a disclosure/specification once (and understand the invention) and the need to read the disclosure/specification 3 or 4 times before you get it.

In patent application prosecution/preparation you have a time limit (unspoken or not). If you continually go over that time limit to get done what needs to get done, you aren’t going to last long — and still be happy.

Great post, Prof. Field. While I’m very biased on the question, I think your main point has even greater validity when assessing new and experienced patent litigators. They need to be good at *learning* about technology; they don’t need to have expansive existing knowledge (though that can often be helpful).

I like your mediator analogy for prosecution work. For patent litigation, the metaphor I’d use is part chess and mostly poker.

Would anyone care to comment whether with respect to the IP sector in the DC area, are we still in “tough economic times”?

I’ve got to admit I’ve had a powerful urge to leave the PTO for quite a while now, but have been hesitating because of all the gloom and doom in the media with respect to the economy and I’m not sure if it would be reasonable to expect a firm to match what I’m currently making as a primary at the PTO since I would be coming in as an agent rather than an attorney.